Posner On Copyright: 10 Cases To Remember

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition

When Judge Richard Allen Posner abruptly retired from the Seventh Circuit Court of Appeals last month, we were so caught off guard that it took a few weeks to get our tribute machine up and running.  Why a tribute to Posner on the Trademark and Copyright Law Blog?  Well, among the many legal areas profoundly influenced by this prolific jurist and author (the list of areas he did not affect would almost certainly be shorter), we think copyright probably rates in the top ten. Judge Posner co-penned influential articles on copyright law, authored dozens of opinions on copyright issues and, even in cases not involving copyright, frequently employed copyright analogies (far more often than his famous cat analogies).

As a belated send-off, we’ve gathered here what we think are the ten most interesting copyright cases Judge Posner authored.

Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983). Plaintiff Jorie Gracen participated in a painting contest to become the featured artist for a line of officially licensed collector’s plates based on MGM’s Wizard of Oz movie. Gracen won the contest with her painting of Dorothy, which was based on her recollection of the movie and on a production still of Judy Garland.  However, Gracen and the defendant could not agree to terms, so the defendant picked another artist to paint its plates. When the plates were issued, they included what was not disputed to be a “piratical copy” of Gracen’s painting.  Gracen filed suit, and the defendant counterclaimed, alleging that Gracen had violated the copyrights in the movie and in the production stills by exhibiting her painting to others in furtherance of her artistic career. Judge Posner, writing for the Court, agreed with the lower court that Gracen’s painting lacked sufficient originality to be an independently copyrightable derivative work. However, the Court vacated the lower court’s judgment that Gracen’s exhibition of her own painting was an infringement, because there was a genuine issue of material fact as to whether she had an implied license. What did the defendant think she was going to do with her painting, Posner asked, “keep it in a closet ‘till MGM’s copyright expired?”

Ty, Inc. v. GMA Accessories, Inc., 132 F.3d 1167 (7th Cir. 1997). In the mid-90’s defendant GMA came out with a line of bean-bag animals to compete with the incredibly popular Beanie Babies marketed by Ty, Inc. A district judge issued an injunction against the continued sale of GMA’s “Preston the Pig” and “Louie the Cow” bean-bags, on the grounds that they were copied from Ty’s “Squealer” and “Daisy” products. GMA did not contest the injunction as to Louie the Cow, but appealed the order as to Preston the Pig. GMA argued that Preston was simply copied from the public domain, and besides that GMA’s designers did not have access to Ty’s Squealer, which had been snapped up by collectors and was very hard to obtain.  Judge Posner, writing for the Court, included a photograph of a “real pig” in the appendix and noted that Preston and Squealer resembled each other in ways that did not resemble pigs in the public domain (and “anyone even slightly familiar with stuffed animals knows that there are many lifelike stuffed pigs on the market”). As to GMA’s claim of no access, Judge Posner acknowledged that Ty’s Squealer was indeed “sometimes hard to find (though not this Christmas, in Chicago at any rate),” but it was not believable that a large company like GMA could not get it hands on one. The injunction was upheld.  No fewer than six trademark and copyright cases involving Beanie Babies came to the Seventh Circuit during Judge Posner’s tenure, and he managed to grab them all for himself.

Corcoran v. Sullivan, 112 F.3d 836 (7th Cir. 1997).  Petitioner Brian Corcoran was a software programmer who became concerned that he was not going to get paid by a certain company, so he planted an “anticipatory time bomb” in his work: the program and all of the data the company entered into it would be deleted upon entering a certain command (which Corcoran tricked the company into entering). Corcoran was convicted of willful destruction of computer data under Wisconsin criminal law.  He petitioned for federal habeas corpus relief, arguing that, because his ownership of the copyright in the software was undisputed, and because copyright law allows the author to destroy his own work, the Wisconsin statute was preempted and his conviction should be wiped out. Judge Posner held that, even if Corcoran owned the copyright in the software, he did not have any rights in the non-copyrighted data connected to it, and a criminal conviction based on deletion of that data was not preempted. “Otherwise,” Judge Posner noted, “ an author invited into the home of someone who had bought one of his books would have a legal privileged to tear up the book if he had retained the copyright in it.”

In re Aimster Copyright Litigation, 334 F.3d 643 (7th Cir. 2003). In 2002, the Recording Industry Association of America and others filed claims for vicarious and contributory copyright infringement against Aimster, a peer to peer file sharing service that piggybacked on instant messaging technology to facilitate the swapping of copyrighted music. The Northern District of Illinois ordered Aimster shut down and Aimster appealed. Although there was no evidence that Aimster had been used for anything other than copyright infringement, Aimster argued that its technology was capable of substantial non-infringing uses. Therefore, Aimster argued, it should be deemed a fair use as in Sony Corp. of American, Inc. v. Universal City Studios, Inc., 464 U.S. 417 (1984), where the Supreme Court found that the Betamax home recording technology, although capable of copyright infringement, was also employed for permissible activities such as time-shift viewing. With an extremely colorful analogy, Judge Posner distinguished the Betamax and Aimster technologies: “A retailer of slinky dresses [i.e., Betamax] is not guilty of aiding and abetting prostitution even if he knows that some of his customers are prostitutes . . . but the owner of a massage parlor [i.e., Aimster] who employs women who are capable of giving massages, but in fact as he knows sell only sex and never massages, to their customers, is an aider and abettor of prostitution.”  The injunction was affirmed.

Pickett v. Prince, 207 F.3d 402 (7th Cir. 2000).  In 1993, the litigant formerly known as Prince changed his name to an unpronounceable “Love Symbol” glyph (which, as Judge Posner observed, “strikingly resembles the Egyptian hieroglyph ankh . . . but the parties make nothing of this, so neither shall we”).  Guitar maker Ferdinand Pickett created a guitar in the shape of the glyph, and showed it to Prince. Shortly thereafter, Prince himself started appearing on stage with a similarly shaped guitar.  In 1994, Pickett filed a copyright infringement suit against Prince. Prince initially counterclaimed for copyright infringement but it turned out that a record company not party to the suit was registered as the copyright owner. By the time Prince got around to having the copyright transferred to him and to refiling his counterclaim, it was July 7, 1997, two days after the statute of limitations period had run on July 5, 1997.  Judge Posner affirmed the lower court’s decision that Pickett could not “claim the right to copyright a work derivative from another person’s copyright without that person’s permission and then sue that person for infringement” of the derivative work. However, he also held that the dismissal of Prince’s counterclaim was the “plainest of plain errors, requiring only a glance at the calendar to discover” because “apparently no one, including the judge, noticed that July 5, 1997 was a Saturday,” and therefore a counterclaim brought on Monday, July 7, 1997 was still timely.

Chicago Board of Education v. Substance, Inc., 354 F.3d 624 (7th Cir. 2003).  The Chicago Academic Standards Exams was supposed to be a “secure test.” It was not marketed or distributed but administered under close supervision at designated test centers, and the copies of the test were destroyed after they were used. The content of each test was drawn from a fixed pool of questions that were intended for later reuse (for validation purposes). George Schmidt was a critic of the test and, in furtherance of this criticism, published in full six of the twenty-two iterations of the test. After a district judge granted an injunction against Schmidt and dismissed his fair use defense, Schmidt appealed. Judge Posner acknowledged that the fair use doctrine “entitled [Schmidt] to criticize the tests and to do that effectively he had to be able to quote from them.” However, the party invoking the fair use doctrine had the burden of proof on that issue, and Schmidt had not put forward any evidence or argument that he needed to publish six full tests (thereby preventing those questions from ever being used again) in order to make his criticism. Meeting this burden was particularly important here because “if Schmidt wins this case, it is goodbye to standardized tests in the Chicago public school system.” However, when given the opportunity to explain his rationale for publishing the full tests, Schmidt simply continued his underlying criticism of test itself, leading Judge Posner to comment that “there is more than a suspicion that Schmidt simply does not like standardized tests.” The lower court’s fair use decision was upheld, because Schmidt copied more than was reasonably necessary and “there is no right to copy copyrighted works promiscuously merely upon a showing that they are bad.”  However, Judge Posner also vacated the “appallingly bad injunction” which, among other “gibberish,” prohibited Schmidt from “copyright distribution of copies.”

Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004). Todd McFarlane’s Spawn comics, first published in 1992, told the story of anti-hero Al Simmons, a deceased CIA agent who makes a deal with the devil so he can return from beyond to see his wife again.  The comic was a hit but, when McFarlane was criticized for sub-par writing, he looked to bring in some pros, including author Neil Gaiman. The two artists didn’t bother with a contract and did not discuss the ownership of the copyright in any joint work, except McFarlane assured Gaiman that he would treat him “better than the big guys.”  Gaiman wrote (and McFarlane drew) new characters, including Count Nicholas Cogliostro and a character referred to by the litigants as medieval Spawn (a 16th century mounted knight who had no name when he was first introduced). In 1996, McFarlane attempted to sell the Spawn franchise, and Gaiman hired counsel to assert that his characters were not a work for hire but a joint work. After years of failed negotiations, during which Gaiman offered to trade his rights in the Spawn characters in return for McFarlane’s rights in the unrelated Miracleman character, Gaiman sued for copyright infringement. In his defense, McFarlane made two arguments.  First, he asserted that Gaiman had done little more than provide the non-copyrightable ideas for these characters, which did not become copyrightable until McFarlane incorporated them into the comic books.  Judge Posner agreed that this argument would have held water if Gaiman merely had walked up to McFarlane and simply said “you need a medieval Spawn,” but this was a situation in which “two or more people set out to create a character jointly.” Second, McFarlane argued that the characters were not protectable under the scenes á faire doctrine, because they were nothing more than commonplace stock characters akin to “a drunken old bum …  a gesticulating Frenchman, a fire-breathing dragon, a talking cat, [or] a Prussian officer who wears a monocle.” (By the way, we don’t get Judge Posner’s reference to a “talking cat” either).  Judge Posner held that, even if Gaiman’s description of the characters were “stock,” once they were drawn and included in the work they became sufficiently distinctive to be copyrightable.  And as to the argument that medieval Spawn was so undistinctive that he doesn’t even have a real name, Judge Posner noted that the “Lone Ranger doesn’t have a proper name either.”

Flava Works, Inc. v. Gunter, 689 F.3d 754 (7th Cir. 2012). As we previously wrote about here, myVidster.com allowed users to engage in “social bookmarking,” specifically, sharing hyperlinks to online videos, which were for the most part pornographic and bookmarked without the permission of copyright owner. The videos were not housed on the myVidster.com site, but were streamed directly from wherever they resided, and surrounded by a myVidster.com frame.  Judge Posner posed the question in the case thusly: “Is myVidster therefore a contributory infringer if a visitor to its website bookmarks the video and later someone clicks the bookmark and views the video?” No, held Judge Posner, because although what the user is doing “is equivalent to stealing a copyrighted book from a bookstore and reading it,” and therefore was “a bad thing to do,” it was not copyright infringement because no copy was made in the process.

Conrad v. AM Cmty. Credit Union, 750 F.3d 634 (7th Cir. 2012). We could not leave out the Banana Lady.  Singer, dancer and frequent plaintiff Catherine Conrad hired herself out to attend corporate events in a custom-made banana costume, where she performed singing telegram-like numbers such as the “Banana Shake” (you can see it here, but you can’t unsee it anywhere). As Judge Posner described, Conrad prohibited members of the audience from taking pictures “except for their ‘personal use,’ which she believes, somewhat implausibly, excludes posting any of the photos on the photo taker’s Facebook page.” When some audience members posted images of her on Facebook, Conrad sued the event organizers, alleging that the photos infringed the copyright in her costume. Judge Posner had some doubt “about the validity of that copyright because banana costumes quite similar to hers are, we are surprised to discover, a common consumer product.”  However, the Court avoided this issue by pointing out that Conrad had sued the wrong party, since the event organizers were not the ones who had taken or posted the images, and Conrad had brought claims only for direct (not contributory) infringement.  Judge Posner’s opinion devoted an extra few paragraphs to calling out Conrad’s “abuse of the legal process by incessant filing of frivolous lawsuits,” and recommending that the Western District of Wisconsin consider not accepting her filings in the future.

Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496 (7th Cir. 2014). This was probably Judge Posner’s last significant copyright opinion before his retirement.  Most of the Sherlock Holmes stories have fallen into the public domain, but the last ten stories (published between 1923 and 1927) are still in copyright (at least until 2018). Plaintiff, the editor of a collection of original stories using the Sherlock Holmes characters, filed a declaratory judgment action to ensure that the collection was not violating the Conan Doyle estate’s copyrights.  The estate argued that Sherlock Holmes and others were not “flat” characters, but “round” ones, whose full complexity is not revealed until the completion of the series, and therefore the characters should not be considered part of the public domain until all the stories are out of copyright. “Repeatedly at the oral argument,” Judge Posner noted, “the estate’s lawyer dramatized the concept of a ‘round’ character by describing large circles with his arms,” but Judge Posner held that “we don’t see how that can justify extending the expired copyright on the flatter character.”  The Court affirmed summary judgment for the plaintiff, thus avoiding what Judge Posner called “the spectre of perpetual, or at least nearly perpetual, copyright.”


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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